There are two legal avenues open to Australian distillers should they decide to challenge the controversial Archie Rose whisky patent, an expert says.
The patent for Archie Rose’s ‘individual malt stream’ blending process entered the national phase on December 17, 2020, enabling the distiller to pursue certification in other markets overseas.
Bosh IP partner Nadia Odorico told Drinks Adventures that a certified patent can be challenged in rare cases if industry stakeholders mount a case that the innovation concerned is not novel and has been done before.
“There’s two ways of doing it,” she said.
“There’s the expensive way, where the challenger has more control. That’s by taking it to the Federal Court and applying for a revocation of the patent on the grounds it is invalid.
“That goes on for years and it can be quite expensive.”
Odorico said there is another avenue open for a legal challenge if the opponents are able to present evidence that definitely shows the innovation has been done before the priority date of the patent, which in this case is May 18, 2018.
“Then, you can submit it for what’s called a re-examination of the innovation patent, so the patent office will take your document and re-examine that patent in the light of that prior art document,” she said.
“You’ve got nothing more to do with it after that point, which means you have less control.
“But it’s much cheaper – $5000 compared to hundreds of thousands going to court.”
Closest prior art
Odorico said the Australian Patent Office does not have expertise in every industry sector, but it can draw upon global databases listing millions of patents to ascertain if an innovation has been done before.
In this case, the closest prior art cited by the patent office was Johnnie Walker Blender’s Batch Espresso Roast, which was created using “heavily roasted barley”.
“If there’s even closer prior art they might not necessarily find it because it’s not really searchable for a patent examiner,” she said.
“That’s when, if someone really cares enough to challenge a patent, and they’ve got that information, then it can be challenged,” she said.
“Sometimes the patent is revoked for being invalid.”
Australian Distillers Association vice president Cameron Syme informed members on February 3 that the association had received “draft advice” on the patent from its legal counsel.
Drinks Adventures has requested a further update.
Patent progressing overseas
Meanwhile, Archie Rose founder Will Edwards has confirmed that the patent is now being considered by authorities overseas.
“We did the best we could to do our research and confirm that no-one was doing this in the countries we wanted to apply in,” he told Drinks Adventures in December.
He said the World Intellectual Property Organisation did the same checks and couldn’t find anyone using the ‘individual malt stream’ process.
“It’s pretty self-evident that if we weren’t confident that it was a unique process, there’s no point wasting all the money to apply in all those countries,” Edwards said.
**Don’t miss further updates on this story. Join our mailing list here.**